| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86682252 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86682252/large |
| LITERAL ELEMENT | STONETECH |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
U.S. trademark application no. 86-682,252 for STONETECH; our file LCT 410057000 The subject trademark application for STONETECH in Classes 2 and 3 has been refused registration under Section 2(d) in view of U.S. registration no. 3,694,310 for the mark STONTEC in Class 1. Objection has been made to the description of goods in the the subject application. Amendments to definitions of goods Addressing the issue of description of goods first, applicant has amended the goods to recite: "Penetrating sealer coatings for use on stone, tile, ceramics, masonry and grout" in Class 2. "Chemical cleaners and polishes, namely, cleaning and polishing preparations for stone, tile, ceramics, masonry and grout" in Class 3. Prior registration for STONETECH owned by applicant With respect to the refusal under Section 2(d), the Trademark Examining Attorney's attention is directed to U.S. Registration No. 3,091,983 for the mark STONETECH issued on May 16, 2006 for the goods "Chemical treatments, namely, stone, tile, ceramics, masonry and grout sealants" in Class 17. The instant applicant is the owner of the '983 registration by assignment recorded at reel/frame 5398/0924. The '983 STONETECH registration predates the cited STONTEC U.S. registration no. 3,694,310, which was filed on July 24, 2006 and issued on October 6, 2009. Taking into account the changes in classification made by the USPTO since its issuance, the goods in the '983 STONETECH registration correspond to the Class 2 goods, as amended, in the subject application. The USPTO has previously determined that there is no likelihood of confusion between the goods of the '983 STONETECH registration and the goods of the '310 STONTEC registration. Accordingly, the same determination should be made between the Class 2 goods, as amended, of the subject application and the Class 1 goods of the cited '310 STONTEC registration. Since the Class 3 goods of the subject application, as amended, are further removed from the Class 1 goods of the cited '310 STONTEC registration, and it should likewise be determined that there is no likelihood of confusion between the two marks as used in connection with these groups of goods. Submission of consent agreement with owner of cited registration Applicant also encloses herewith a copy of the executed 2010 consent Agreement between applicant's predecessor-in-interest in the '983 STONETECH registration, E.I. du Pont de Nemours and Company, and the owner of the cited '310 STONTEC registration, StonCor Group, Inc. (the "Consent Agreement"). The Consent Agreement is specifically described as running with and assignable to the subsequent owner of the '983 STONETECH registration, here the applicant Laticrete International, Inc. Dupont factors Applicant submits that there is no likelihood of confusion under Section 2(d) after taking into account the factors set forth in In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Applicant analyzes relevant du Pont factors below: Similarity or dissimilarity of the marks in their entireties The du Pont case identified this factor to be considered as the "similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." Id., 476 F.2d at 1361, 177 USPQ at 567. "That marks must be considered in their entireties in determining whether there is likelihood of confusion or mistake is a basic rule in comparison of marks." Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402, 181 USPQ 272, 273-74 (CCPA 1974) (reversing Board and holding that F.I.T. (stylized) not confusingly similar to FIA and design). In this case, applicant's and registrant's marks are not identical, with applicant's mark having and "E" and "H" missing from the cited registration. The Court of Appeals for the Federal Circuit and its predecessor have held that marks must be considered in the way they are perceived by the relevant public, in determining likelihood of confusion. Opryland USA Inc. v. The Great American Music Show Inc.23 USPQ2d 1471, 1473 (Fed. Cir. 1992). Applicant submits that the relevant public here would perceive the marks differently. The market interface between applicant and the owner of the prior mark, and consent agreement As indicated above, applicant has attached a copy of the executed consent agreement with the owner of the cited '310 STONTEC registration, StonCor Group, Inc. In Section 4.1 of the Consent Agreement, the owner of the cited '310 STONTEC registration agrees that it has no objection to registration of the STONETECH mark in connection with cleaners, sealers and polishes for stone; chemical treatments for cleaning, sealing and coating products made of stone, and/or tile, and/or ceramics, and/or masonry and chemical treatments for cleaning, sealing and coating grout. These goods correspond to those of the subject application, as amended, and StonCor has agreed in Section 7.1 to the further registrations of the mark "STONETECH" in connection with these goods. The parties have further agreed in Section 1.5 that "having separately investigated the facts concerning the goods of the respective parties and the sale of same under the respective marks, and the manner of sale and the trade channels through which StonCor and DuPont sell their respective goods under the respective marks, believe that there is no and cannot be any likelihood of confusion, as a matter of law, between the marks 'STONTEC' and 'STONETECH' as used by StonCor and by DuPont, respectively." Consequently, the existence of the consent agreement between the applicant and the registrant, who are most familiar with use in the marketplace, along with the other factors discussed below weighs heavily in favor of registration of the instant mark. Similarity or dissimilarity of the goods The Trademark Examining Attorney has not taken the position that the goods of applicant and registrant are either the same or are closely related. There are clear differences between the Class 2 and 3 goods in the subject application and the Class 1 goods of the cited '310 registration. Moreover, these differences are explicitly noted by the parties in Sections 2.2, 2.3, 3.2 and 3.3 of the Consent agreement. As such, this factor favors applicant Condition of sales and buyers There is no evidence that registrant's Class 1 goods would be offered in the same channels of trade as applicant's Class 2 and 3 goods. This is recognized by the parties to the Consent Agreement in Sections 2.3 and 3.3. Accordingly, the factor of the condition of sales and the buyers of the respective goods favors applicant. Extent of potential confusion In view of the actual difference in the goods themselves and channels of trade, the potential for confusion is de minimus. As such, this factor favors applicant. All of the foregoing weighs in favor of a finding of no likelihood of confusion. It is for these reasons that applicant respectfully requests that the instant application be allowed and passed to publication pursuant to the Trade Marks Act of 1946. Finally, the Trademark Examining Attorney has inquired as to possible significance and meaning of the term "stonetech." Applicant states that "stonetech" has no significance as applied to the goods and is not a "term of art" within applicant's industry. Respectfully submitted, Peter W. Peterson |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_5019871169-20160219142520299842_._B_2010__TRADEMARK_CO-EXISTENCE_AGREEMENT__FULLY_EXECUTED_-C1.pdf |
| CONVERTED PDF FILE(S) (11 pages) |
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| \\TICRS\EXPORT16\IMAGEOUT16\866\822\86682252\xml5\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\822\86682252\xml5\ROA0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\822\86682252\xml5\ROA0005.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\822\86682252\xml5\ROA0006.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\822\86682252\xml5\ROA0007.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\822\86682252\xml5\ROA0008.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\822\86682252\xml5\ROA0009.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\822\86682252\xml5\ROA0010.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\822\86682252\xml5\ROA0011.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\822\86682252\xml5\ROA0012.JPG | |
| DESCRIPTION OF EVIDENCE FILE | 2010 Consent Agreement |
| GOODS AND/OR SERVICES SECTION (002)(current) | |
| INTERNATIONAL CLASS | 002 |
| DESCRIPTION | |
| PAINTS, COATING, SEALERS; PAINTS, COATINGS, SEALERS AND CHEMICAL TREATMENTS FOR EXTERIOR AND INTERIOR SURFACES; STONE, TILE, CERAMICS, MASONRY AND GROUT SEALERS | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (002)(proposed) | |
| INTERNATIONAL CLASS | 002 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| PENETRATING SEALER COATINGS FOR USE ON STONE, TILE, CERAMICS, MASONRY AND GROUT | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (003)(current) | |
| INTERNATIONAL CLASS | 003 |
| DESCRIPTION | |
| CLEANING PREPARATIONS; POLISHING PREPARATIONS; CLEANING PREPARATIONS, POLISHING PREPARATIONS AND CHEMICAL TREATMENTS FOR EXTERIOR AND INTERIOR SURFACES; CHEMICAL CLEANERS AND POLISHES FOR STONE, TILE, CERAMICS, MASONRY AND GROUT | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (003)(proposed) | |
| INTERNATIONAL CLASS | 003 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| CHEMICAL CLEANERS AND POLISHES, NAMELY, CLEANING AND POLISHING PREPARATIONS FOR STONE, TILE, CERAMICS, MASONRY AND GROUT | |
| FILING BASIS | Section 1(b) |
| ADDITIONAL STATEMENTS SECTION | |
| ACTIVE PRIOR REGISTRATION(S) | The applicant claims ownership of active prior U.S. Registration Number(s) 3091983. |
| SIGNIFICANCE OF MARK | STONETECH appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Peter W Peterson/ |
| SIGNATORY'S NAME | Peter W Peterson |
| SIGNATORY'S POSITION | Attorney of Record, Connecticut bar member |
| SIGNATORY'S PHONE NUMBER | 203-787-0595 |
| DATE SIGNED | 02/19/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 19 14:38:36 EST 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0160219143836168696-86682 252-550f36a4685bb5be7aa36 5ca3ec13183449b81e2180f3b 530c741813eb6f252a92-N/A- N/A-20160219142520299842 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
U.S. trademark application no. 86-682,252 for STONETECH; our file LCT 410057000
The subject trademark application for STONETECH in Classes 2 and 3 has been refused registration under Section 2(d) in view of U.S. registration no. 3,694,310 for the mark STONTEC in Class 1. Objection has been made to the description of goods in the the subject application.
Amendments to definitions of goods
Addressing the issue of description of goods first, applicant has amended the goods to recite:
"Penetrating sealer coatings for use on stone, tile, ceramics, masonry and grout" in Class 2.
"Chemical cleaners and polishes, namely, cleaning and polishing preparations for stone, tile, ceramics, masonry and grout" in Class 3.
Prior registration for STONETECH owned by applicant
With respect to the refusal under Section 2(d), the Trademark Examining Attorney's attention is directed to U.S. Registration No. 3,091,983 for the mark STONETECH issued on May 16, 2006 for the goods "Chemical treatments, namely, stone, tile, ceramics, masonry and grout sealants" in Class 17. The instant applicant is the owner of the '983 registration by assignment recorded at reel/frame 5398/0924.
The '983 STONETECH registration predates the cited STONTEC U.S. registration no. 3,694,310, which was filed on July 24, 2006 and issued on October 6, 2009. Taking into account the changes in classification made by the USPTO since its issuance, the goods in the '983 STONETECH registration correspond to the Class 2 goods, as amended, in the subject application.
The USPTO has previously determined that there is no likelihood of confusion between the goods of the '983 STONETECH registration and the goods of the '310 STONTEC registration. Accordingly, the same determination should be made between the Class 2 goods, as amended, of the subject application and the Class 1 goods of the cited '310 STONTEC registration.
Since the Class 3 goods of the subject application, as amended, are further removed from the Class 1 goods of the cited '310 STONTEC registration, and it should likewise be determined that there is no likelihood of confusion between the two marks as used in connection with these groups of goods.
Submission of consent agreement with owner of cited registration
Applicant also encloses herewith a copy of the executed 2010 consent Agreement between applicant's predecessor-in-interest in the '983 STONETECH registration, E.I. du Pont de Nemours and Company, and the owner of the cited '310 STONTEC registration, StonCor Group, Inc. (the "Consent Agreement"). The Consent Agreement is specifically described as running with and assignable to the subsequent owner of the '983 STONETECH registration, here the applicant Laticrete International, Inc.
Dupont factors
Applicant submits that there is no likelihood of confusion under Section 2(d) after taking into account the factors set forth in In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Applicant analyzes relevant du Pont factors below:
Similarity or dissimilarity of the marks in their entireties
The du Pont case identified this factor to be considered as the "similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." Id., 476 F.2d at 1361, 177 USPQ at 567. "That marks must be considered in their entireties in determining whether there is likelihood of confusion or mistake is a basic rule in comparison of marks." Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402, 181 USPQ 272, 273-74 (CCPA 1974) (reversing Board and holding that F.I.T. (stylized) not confusingly similar to FIA and design). In this case, applicant's and registrant's marks are not identical, with applicant's mark having and "E" and "H" missing from the cited registration.
The Court of Appeals for the Federal Circuit and its predecessor have held that marks must be considered in the way they are perceived by the relevant public, in determining likelihood of confusion. Opryland USA Inc. v. The Great American Music Show Inc.23 USPQ2d 1471, 1473 (Fed. Cir. 1992). Applicant submits that the relevant public here would perceive the marks differently.
The market interface between applicant and the owner of the prior mark, and consent agreement
As indicated above, applicant has attached a copy of the executed consent agreement with the owner of the cited '310 STONTEC registration, StonCor Group, Inc. In Section 4.1 of the Consent Agreement, the owner of the cited '310 STONTEC registration agrees that it has no objection to registration of the STONETECH mark in connection with cleaners, sealers and polishes for stone; chemical treatments for cleaning, sealing and coating products made of stone, and/or tile, and/or ceramics, and/or masonry and chemical treatments for cleaning, sealing and coating grout. These goods correspond to those of the subject application, as amended, and StonCor has agreed in Section 7.1 to the further registrations of the mark "STONETECH" in connection with these goods.
The parties have further agreed in Section 1.5 that "having separately investigated the facts concerning the goods of the respective parties and the sale of same under the respective marks, and the manner of sale and the trade channels through which StonCor and DuPont sell their respective goods under the respective marks, believe that there is no and cannot be any likelihood of confusion, as a matter of law, between the marks 'STONTEC' and 'STONETECH' as used by StonCor and by DuPont, respectively."
Consequently, the existence of the consent agreement between the applicant and the registrant, who are most familiar with use in the marketplace, along with the other factors discussed below weighs heavily in favor of registration of the instant mark.
Similarity or dissimilarity of the goods
The Trademark Examining Attorney has not taken the position that the goods of applicant and registrant are either the same or are closely related. There are clear differences between the Class 2 and 3 goods in the subject application and the Class 1 goods of the cited '310 registration. Moreover, these differences are explicitly noted by the parties in Sections 2.2, 2.3, 3.2 and 3.3 of the Consent agreement. As such, this factor favors applicant
Condition of sales and buyers
There is no evidence that registrant's Class 1 goods would be offered in the same channels of trade as applicant's Class 2 and 3 goods. This is recognized by the parties to the Consent Agreement in Sections 2.3 and 3.3. Accordingly, the factor of the condition of sales and the buyers of the respective goods favors applicant.
Extent of potential confusion
In view of the actual difference in the goods themselves and channels of trade, the potential for confusion is de minimus. As such, this factor favors applicant.
All of the foregoing weighs in favor of a finding of no likelihood of confusion. It is for these reasons that applicant respectfully requests that the instant application be allowed and passed to publication pursuant to the Trade Marks Act of 1946.
Finally, the Trademark Examining Attorney has inquired as to possible significance and meaning of the term "stonetech." Applicant states that "stonetech" has no significance as applied to the goods and is not a "term of art" within applicant's industry.
Respectfully submitted,
Peter W. Peterson
